The opinion of the court was delivered by: SMITH
This is a suit for patent infringement, and the issues are those usually raised, to wit, validity and infringement. The complaint presents two separate and distinct, but related, caused of action, each predicated on a different patent. The patents and the alleged infringements thereof are separately considered.
The plaintiff, Moses J. Schifrin, is, and was, the owner of Patent No. 1,934,398, issued on the application of Aaron Benowitz, filed on November 7, 1931. The said plaintiff acquired all right, title and interest in and to the said patent, including the right to sue thereon for past infringement, under an assignment, by the Synthetic Fur Mills Corporation. The plaintiff, Concord Chenille Co., Inc., was, at the time suit was instituted, the exclusive licensee under the said patent.
The alleged invention is adequately defined in claims 1 and 4, both of which the plaintiff relies upon and alleges were, and are, infringed by the defendants, who admittedly are, and have been engaged in the manufacture and sale of embroidered fabrics in which curled chenille is used. The invention is defined in the said claims as follows:
"1. A means of imparting to a yarn a special from, comprising a heated tube moveable back and forth, the said tube being formed with a threaded inner surface."
"4. A means for imparting to a yarn or chenille a special form, comprising a heated tube formed with a threaded inner surface and adapted to permit a back and forth movement of the said yarn therein."
When the claims are read and interpreted in the light of the rejected claims and the prior art, it is apparent that the alleged invention is restricted to the described "means" for curling the radial fibres of tufted cords, such a chenille, etc. The alleged invention is, in fact, nothing more than a reciprocating heated tube, the inner surface of which is threaded.
A complete anticipation of the claims in suit is found in the prior art, as exemplified in the Goodman patent (No. 1,065,235) and the Societe Roesch & Cie patent (France -- No. 432,113). The former is directed, not only to a machine for treating chenille, but, to a reciprocating heated tube as an integral part thereof; the latter is similarly directed, not only to a machine for treating chenille, but, to a reciprocating heated tube as an integral part thereof. The conclusion that the Benowitz patent follows the disclosures of the prior art, is inescapable. The exhibits of the defendants, which include a machine constructed under the teachings of the Goodman patent, place this conclusion beyond reasonable doubt. The said claims, therefore, are invalid.
It is evident that heated tubes similar to, if not identical with, those described in the Benowitz patent, had been in public use in the art, not only prior to the application for the said patent (November 7, 1931), but prior to the application for the Goodman patent (January 9, 1912). It clearly appears from the undisputed testimony that before the introduction of mechanical devices the radial fibres of tufted cords, such as chenille, etc., had been curled by drawing the said cords through heated tubes by manual operation. The device to which the patent in suit is directed was, therefore, not patentable.
The absence of invention is beyond question. The patentee made no contribution to the art. The introduction of the "threaded inner surface", which the plaintiff contends is an essential element of the alleged invention, required nothing more than mechanical ingenuity. It clearly appears, however, from the uncontradicted testimony, that this element was not new, and for this reason, if no other, was not patentable.